ITC rules Microsoft’s Xbox doesn’t infringe on Motorola patent

The U.S. International Trade Commission has decided to make final a judge’s preliminary ruling that Microsoft’s Xbox console does not infringe on a Motorola patent.

The decision brings to a close a case in which Motorola — now owned by Google — had sought an import ban into the U.S. of all Xbox consoles, claiming that certain technologies used in the Xbox violate Motorola’s patents. (Xbox console are manufactured mainly in China.)

An ITC judge had issued a preliminary ruling in March in Microsoft’s favor. The ITC’s decision to let that ruling stand without review by the full six-member commission means it’s now impossible for Google to seek an import ban on the Xbox based on the patents at issue.

“This is a win for Xbox customers and confirms our view that Google had no grounds to block our products,” David Howard, Microsoft deputy general counsel, said in a statement.

A Google spokesman said: “We’re disappointed with this decision and are evaluating our options.”

Motorola’s case, brought before the ITC in 2010, had originally said Microsoft violated five of its patents.

ITC Judge David Shaw had initially ruled in April 2012 that Microsoft had violated four of those five patents that Motorola had originally brought forward in the case. But the full six-member commission later remanded the entire case back to Judge Shaw for reconsideration.

Four of the five patents were later removed from the case. (All four of those patents were standard-essential patents – patents for technologies deemed so essential that they have become standard use in the industry. Google removed two of them when they were about to expire. Google removed two more after it settled with the U.S. Federal Trade Commission in January, agreeing to license its standard-essential patents on fair and reasonable terms.)

Today’s final ITC decision affirms that Microsoft did not violate the fifth, remaining patent in the case. (That fifth, remaining patent was not a standard-essential patent.)

That doesn’t mean an end to patent battles between Microsoft and Google.

In Seattle, U.S. District Court Judge James Robart issued a ruling in April that was largely favorable to Microsoft. In that case, Microsoft had contended that Motorola breached an agreement to provide certain of its standard-essential patents on “fair and reasonable” terms. Judge Robart in April determined a royalty rate that would be fair for Motorola to ask Microsoft to pay — an amount that was far closer to what Microsoft had suggested, rather than what Motorola had proposed.

The second half of that trial — to determine whether Motorola had indeed breached its agreement — is scheduled to begin in late August.

Microsoft and Google also still have ongoing patent fights in courts in Germany.

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Welcome to Microsoft Pri0: That's Microspeak for top priority, and that's the news and observations you'll find here from Seattle Times technology reporter Matt Day. Send tips or comments to mday@seattletimes.com.